IPBiz

Intellectual property news affecting business and everyday life

Saturday, June 30, 2007

"It is always easier to deal with things than with men"

More than one year ago, IPBiz discussed efforts by California's CIRM to come up with an intellectual property policy. More than one year later, everyone is still waiting to hear from CIRM. SB 771 isn't happening.Californiastemcellreport noted that the removal of SB771 gave CIRM breathing room: Johnson also quoted Dale Carlson, chief communications officer for CIRM, as saying the agency appreciates "being able to finish their policy without having to worry about legislators passing a competing one.""We begged and pleaded for time to complete our regulatory process and it appears that's what they're giving us."

What policy?

Testimony given more than one year ago to CIRM included historically inaccurate statements about the Wright Brothers and about the aviation patent pool. Look at IPBiz posts of May 28 and of July 1.

For further historical background, I include some text from the book by James Tobin, To Conquer the Air, Free Press, 2003.

page 332: "Curtiss weighed his options. The Wrights already had invented a practical aeroplane and patented it. If he wished to sell his own aeroplanes without paying the Wrights for the privilege, he had three choices. He could use the Wrights' system and instantly incur a lawsuit for violating their patent rights. He could adapt or improve the Wrights' system--this was what the AEA claimed to have done, but with no assurance of escaping patent problems. Or he could find some wholly new system of controlling an aeroplane. This was what Bell hoped to do with tetrahedrals, and what Herring said he could do with gyroscopes. Only this option offered an escape from the shadow of the Wrights."

"America has taken the lead in the development of aviation. (...) If Congress will offer no incentive to inventors to remain in their own country, the next best thing is to keep them here by private enterprise. This has now been done...."

IPBiz notes, at that time, financing of research by states was not even considered.

At page 339, Tobin notes that Bleriot flew across the English Channel in 1909 in a monoplane.

At page 353, Tobin notes that Judge John R. Hazel ordered the Herring-Curtiss Company and Glenn Curtiss to stop making aeroplanes on grounds that they infringed upon patents owned by Wilbur and Orville Wright.

At pages 360-1, Tobin notes that Alexander Graham Bell, in presenting the first Langley Award to the Wrights, congratulated the Wrights for bringing the aerodrome to the commercial and practical stage. But it was Langley himself, Bell declared, who must be recognized as "the great pioneer of aerial flight." Langley had constructed "a perfectly good flying machine" that failed to fly only because of a faulty launcher. IPBiz notes that comments such as these of Bell presaged the Curtiss attack on the the Wright patent based on the re-constructed Langley Aerodrome.

On page 361, Tobin notes "The whole aim of Will's [Wilbur Wright's] efforts from 1905 to 1909 had been to avoid "business cares and vexatious law suits.""

There is an important quote of Wilbur Wright on page 361: "We had hoped in 1906 to sell our invention to governments for enough money to satisfy our needs and then devote our time to science, but the jealously of certain persons blocked this plan, and compelled us to rely on our patents and commercial exploitation... When we think what we might have accomplished if we had been able to devote this time to experiments, we feel very sad, but it is always easier to deal with things than with men, and no one can direct his life entirely as he would chose." [This was written in January 1912. Four month later, Wilbur became ill in Boston. He died on May 30, 1912.]

Also of note in the Tobin book is the discussion of Amos Ives Root. On page 220, Tobin notes that an account written by Root for his readers of Gleanings in Bee Culture was rejected for publication in Scientific American.

#1. On the idea that Carhart's idea was previously known, the Bell text includes lines such as

Although not an entirely novel theory, Carhart's reasoned analysis provides insight into Lee's Gettysburg strategy on the third day of the battle. (8) [IPBiz notes that footnote 8 is to Carhart at page 23 (acknowledging that other historians have speculated, without supporting evidence, that Stuart sought Meade's rear position).

Although the evidence for Lee's scheme of maneuver previously existed, Carhart's Lost Triumph sheds new light on Lee's ultimate purpose. (38) So why wasn't Lee successful?

BUT

Carhart's Lost Triumph forges a new and more complex understanding of Lee's battle plan at Gettysburg, of Lee as a commander, and of Custer's officership.

#2. Of the use of older materials, the Bell text includes lines

Carhart, however, disappoints readers by failing to note the account of Captain William E. Miller of the 3d Pennsylvania Cavalry:

[Stuart's] avowed object was to strike the rear of the Federal army in cooperation with Pickett's grand attack upon its center. For this movement he succeeded in attaining a most commanding position, and, according to the surmise of Major H. B. McClellan, Stuart's adjutant-general, gave to Lee the preconcerted signal for the attack. The field of this cavalry fight was south of the Rummel buildings. To this field Stuart advanced his whole force, engaged in an obstinate and desperate struggle with the Federal cavalry, was driven back out of the field and forced to retire to his original position. (51)

Of #1, neither Carhart nor Bell have identified exactly what evidence Carhart put forward to advance his thinking over that of Paul Walker, who advanced exactly the same theory that Carhart did. [And, IPBiz is not saying Walker was first to advance the theory.] LBE raised this issue, in print, before the Bell matter was posted or published.

#2 is more interesting. In a rather convoluted citation string, Bell is quoting Miller (1887) who is citing McClellan (date unknown) for the proposition that Stuart "gave to Lee the preconcerted signal for the attack." This "preconcerted signal" idea is used by Carhart.

However, IPBiz, in researching a lead provided by civilwarcavalry (Eric Wittenberg), learned that, around the year 1878 (two years after Custer's demise at Little Big Horn), Brooke-Rawle and McClellan were having a disagreement over who controlled the Rummel building at the end of the battle at East Cavalry Field. In looking at that disagreement, one notes that McClellan's view of Stuart's action was as a diversion (not as an attack) and McClellan NEVER said the cannon shots WERE signals to Lee. What McClellan did say was I have been somewhat perplexed to account for Stuart's conduct in firing these shots and McClellan allowed they might have been a prearranged signal to LeeOR to determine if Federal cavalry were in Stuart's immediate vicinity. Unless McClellan had a massive change in thinking by the year 1887 (and Bell ought to provide a citation for that), one observes that Bell's use of the Miller text is misleading in mentioning ONE of McClellan's theories, but not the other.

Bell stated: "By failing to acknowledge Miller's testimony, Carhart misses a persuasive ally." However, one notes that Brooke-Rawle had considered the coordination of Stuart's attack with that of Longstreet/Pickett to have been "obvious." One does have to note a fine point. Even McClellan would say that Stuart's (diversionary) attack was coordinated with that of Longstreet/Pickett. However, McClellan's story is that Stuart was secondary in that Stuart was to divert AND to take advantage of what Longstreet/Pickett might accomplish.

A way to distinguish the theories is in the intent of the cannon shots. To believe Carhart, one has to believe the cannot shots were a signal to Lee (and NOT to the Union forces who were closer by) and that the cannon shots would not impair Stuart's ability to deliver a decisive attack to the Union rear. This does not pass the stright face test. The Union commanders were well aware of Stuart's position BEFORE Pickett's movement began. They were aware of the cannon shots. They even saw Stuart's men. Separately, if Stuart understood that driving into the Union rear was critical to the Confederate game plan on July 3, one suspects Stuart would have committed his numerically superior forces in a different way.

A decisive quotation on Stuart's intentions is Brooke-Rawle quoting Stuart himself: "Had the enemy's main body been dislodged, as was confidently hoped and expected" (by Pickett's charge) "I was in precisely the right position to discover it and improve the opportunity."

Custer's legend began with his participation in the cavalry engagement during the third day of the battle at Gettysburg. Gen. Robert E. Lee sent his cavalry under Maj. Gen, J.E.B. Stuart to strike at the Union rear at the same time he sent Maj. Gen. George Pickett's division into the Union center on Cemetery Ridge. Custer, leading the 500 horsemen of the 1st Michigan Cavalry with the cry "Come on, you wolverines," slammed into Stuart's Confederates with such violence that horses and men were thrown upside down.

"Custer's Civil War record has been overlooked," Williams said. He credits Custer with being the first member of the Army Air Corps.

During the Peninsula Campaign in 1862 as an aide-de-camp for Gen. George McClelland [sic], Custer was assigned to survey the enemy lines from a hydrogen [sic] balloon provided by Thaddeus Lowe.

"He described it as 'the most unpleasant experience of my life,' " Williams said. The basket on the balloon was but 2 feet deep.

***

Another reason that Jason M. Bell should NOT be surprised that Carhart did NOT mention Miller's work pertains to Miller's treatment of Custer:

A lull in the firing now ensued, during which Custer's brigade returned. After the engagement had opened McIntosh had discovered that the force in his front was too strong for his command, and consequently he had sent word to General Gregg to that effect, requesting that Irvin Gregg's brigade be forwarded to his support. As this brigade was some distance to the rear, and therefore not immediately available, Gregg, meeting Custer, who was about to begin his march in the opposite direction, had ordered him to return, and at the same time had sent word to Irvin Gregg to concentrate as much of his command as possible in the vicinity of Spangler's house. Custer, eager for the fray, had wheeled about and was soon on the field.

(...)

The 1st Michigan, drawn up in close column of squadrons near Pennington's battery, was ordered by Gregg to charge. Custer, who was near, placed himself at its head, and off they dashed.

(...)

These flank attacks demoralized the Confederate column. Custer and McIntosh, whose tenacity had kept the head of the column at bay, now got the advantage.

****The Miller text does contain the words identified by Bell:

Stuart had with him the main strength and the flower of the Confederate cavalry, led by their most distinguished commanders. His force comprised 4 brigades with 20 regiments and battalions and 4 batteries. His avowed object was to strike the rear of the Federal army in cooperation with Pickett's grand attack upon its center. For this movement he succeeded in attaining a most commanding position, and, according to the surmise of Major H. B. McClellan, Stuart's adjutant-general, gave to Lee the preconcerted signal for the attack. The field of this cavalry fight was south of the Rummel buildings. To this field Stuart advanced his whole force, engaged in an obstinate and desperate struggle with the Federal cavalry, was driven back out of the field and forced to retire to his original position. At the opening of the engagement they were advanced to its northern side. The losses on both sides show the importance and determined character of the fight.

Of course, Miller does not mention that McClellan provided an alternate meaning for the cannon shots. But Miller does give a piece of data as to timing:

A party of Confederate skirmishers thrown out in front of Stuart's center occupied the Rummel farm buildings, which were situated in the plain about three-fourths of a mile north-west of the Lott house, and near the base of Cress's Ridge. About 2 o'clock McIntosh, who well understood Stuart's tactics, and had correctly discerned his position, dismounted the 1st New Jersey and moved it forward under Major Beaumont in the direction of Rummel's. To meet this advance the Confederates pushed out a line of skirmishers and occupied a fence south of Rummel's. The 1st New Jersey soon adjusted their line to correspond with that of their antagonists, and firing began.

If the time of 2pm is correct, Stuart would have understood Pickett's Charge was proceeding, and would NOT have merely been putting out skirmishers, IF Stuart thought he was part of a critical plan to cut the Union forces in half. If Stuart was settling in to take advantage of something else, then his actions make some sense.

In a case evoking previous bad actions at Southern Illinois University (SIU), Acting Deputy Mayor for Education Victor Reinoso of Washington, DC would not disclose to the D.C. Council on June 27 whether he was the person responsible for copying a section of the Charlotte-Mecklenburg system’s education plans and including it in a city proposal without attribution in an episode earlier this year.

Victor A. Reinoso, the acting D.C. deputy mayor for education, declined yesterday to say whether he wrote the plagiarized report that has put an embarrassing mark on his six-month tenure.

Reinoso cited legal advice for the refusal as he appeared before the D.C. Council, which will vote July 10 on whether to confirm his appointment to deputy mayor for education -- one of several positions created as Mayor Adrian M. Fenty (D) has taken the helm of public education.

Bloomberg reports: Broadcom is seeking $6 for every handset sold with a Qualcomm chip that was found to infringe a patent for a battery- saving feature, Broadcom spokesman Bill Blanning said June 28. Qualcomm rejected the offer, made earlier this week, and instead offered to pay $100 million and agree that the companies would give each other royalty-free access to patents.

"Broadcom is asking for a royalty rate for one patent greater than the rate we ask for our entire portfolio," Qualcomm spokesman Bill Davidson said in an interview. "We rejected it because it's an extraordinary request."

Bloomberg also noted: Broadcom's remedy is "grossly out of proportion to the value of this particular patent," Blecker wrote in his reply. Bloomberg News obtained copies of both documents.

Qualcomm's offer of royalty-free access to its patents is similar to one the chipmaker has with larger competitor Texas Instruments Inc. of Dallas. Qualcomm generates the bulk of its royalties by charging handset makers less than 5 percent of the wholesale cost of a handset.

Royalties generated $636 million of Qualcomm's earnings before taxes, or about 67 percent of its profit for the quarter that ended in March.

The ITC ban is opposed by the largest U.S. wireless carriers and emergency-response agencies. The decision is being reviewed by U.S. Trade Representative Susan Schwab and possibly by President George W. Bush, with a final decision on whether to approve the ITC ruling due before Aug 7.

Bloomberg did report:

"The per-handset royalty we're asking for is less than the royalty Qualcomm demanded from Broadcom" during a lawsuit earlier this year over video-compression patents, he said. Qualcomm lost a trial on that issue, Blanning said.

But Qualcomm executives said the $6 per cellphone would translate into a royalty rate of 30% on its chips, a percentage far above the industry norm. Broadcom's real motivation is to "destroy Qualcomm's business model," argued Louis Lupin, Qualcomm's general counsel.

Within the WallStreet article one has:

Though Qualcomm is known for wielding patent power in cellphones -- charging royalties of close to 5% of the price of many handsets -- the ITC ruling and another jury verdict have given Broadcom negotiating leverage in entering the market for handset chips.

Those who remember Jaffe and Lerner's Innovation and Its Discontents may recall their favorable treatment of Qualcomm. Of course, the H.264 business probably would not have been mentioned. Jaffe and Lerner's characterization of "patent history" was cartoonish and two-dimensional, and we are seeing the real world of patent litigation as the saga of Qualcomm and Broadcom unfolds.

Although an AP article by Chris Rugaber suggests the Supreme Court is business-friendly, two quotes within the article suggest that the true driver of the Supreme Court (as to patent issues) may be concern with lawyer-driven litigation:

Thomas Goldstein mentions that the justices share the concern of many business groups that excessive litigation places a burden on business and the US economy.

Roy T. Englert is quoted: "The entire Supreme Court has a mistrust of lawyer-driven litigation. The justices don't see real injured people bringing claims, but lawyers seeking settlements."

Applying this view to patent reform, it's certainly NOT bad patents that are at issue, or even bad litigations, but rather the perception that one has lawyer-driven litigation.

This is a point that Jaffe and Lerner have hammered.

LBE had written in 2005:

Adam B. Jaffe and Josh Lerner have stated that "Increasingly, the firm with best lawyers or the greatest willingness to risk litigation wins the innovation wars --rather than the company with the brightest scientists or the most original, valuable ideas." Jaffe and Lerner further assert "Whatever the solutions, when issues of US patent policy are considered by the courts, the Congress, and the executive branch, you can be sure that the opinions of patent lawyers and patent holders will be heard. While their arguments will often be couched in terms of the public interest, at bottom their focus will be on improving their own profits and livelihoods, not on designing a patent system to foster the overall rate of innovation."

(...)

In a review of the Jaffe/Lerner book, Brad Stone (Newsweek Web, Oct. 13, 2004) wrote in Plain Text: Patent Problems: But [the Forgent lawsuit] is evidence of a system out of control. The patent process seems to incentivize pinstriped lawyers instead of white-smocked inventors. A litany of smaller firms such as Forgent, The SCO Group in Lindon, Utah, and Eolas Technologies of Chicago have become what their critics call "trolls"--companies with ambiguous intellectual-property claims whose only hope to enrich their bottom line is to strike it rich in court. … The proliferation of patent squabbles like the Forgent case are swallowing much of the time, money and risk-taking of America's technology firms. Patent law was meant to enable innovation, not discourage it.

Thus, although Jaffe and Lerner may not understand patent quality, or even prior art, they have a winner in characterizing, and selling, the patent wars as lawyer fights. Ironically, although the value, as scholarship, of Innovation and Its Discontents is marginal, it was out-of-this-world as a political argument. It's truly sad that most legal academics did not understand the difference.

Thursday, June 28, 2007

The AP reported: Biotechnology company StemCells Inc. said Thursday, June 28, 2007, it has agreed to a stay in its patent-dispute lawsuit against Neuralstem Inc. while the U.S. Patent and Trademark Office re-examines the patents in question.

AP also noted: "We are confident that all of these patents will emerge from this process substantively unchanged," Martin McGlynn, president and chief executive officer of StemCells, said in a statement. "We firmly believe that in time Neuralstem will be found by the courts to be infringing our patents."

***IPBiz notes that the precipitating event apparently was a decision by the USPTO granting a re-exam request of claims of the StemCells patents. News-medical net reported:

The U.S. Patent Office recently ruled in favor of Neuralstem and ordered re-examinations of all the StemCells Inc. patents in a suit finding that there were "serious new questions of patentability" problems with each claim of every patent under re- examination.

IPBiz reminds people that the Eolas patent, questioned by many, survived re-exam without changes to the claims. Patents of Thomson / WARF are currently in re-exam.

Lee, Aharonian exchange thoughts on software patents

IPBiz notes the following thread at IPCentral concerning a dialog between Lee and Aharonian, arising from an oped by Lee in the New York Times:

Ugh. Well, here we go. My take.

1) In fairness to Tim, Greg has also expended a good bit of energy in pointing out that tech executives on the one hand point out the problems of patents in the tech area (hardware as well as software, and IBM as well as Microsoft) while filing patent after patent, many of them questionable.

My take: This contradictory behavior isn't really evidence of anything at all; not a pernicious change of heart by Microsoft now that they are a large firm (Tim) nor a pernicious hypocrisy by IBM (Greg) but simply reflects the fact that the firm's short term interest narrowly conceived (file lots of patents) are not necessarily in the firm's long term interest broadly conceived (make sure the patent system isn't clogging up the whole economy).

2) My take: the focus on software patents in the oped is, however, rather misleading; the problems of the patent system are broader than that, affecting tech in general and not software in particular. Furthermore, these problems are not inherent in any patent system, but are peculiar to our system, because of problems with the way it is administered. Note that in Lee's 1991 quote from Gates, Gates is concerned not that software patents are inherently bad, but that the way they have been implemented has not worked out.

3) It is doubtful whether it would have been possible to know in advance the "correct" answer to the question of whether copyright law or patent law "ought" to be applied to software. There are arguments that cut both ways. There is no evidence that going back would offer an improvement. The best thing for the future:

a) Strengthen patent institutions so that decisions on close calls like this are made as well as they can be andb) Strengthen patent institutions so that where-ever it is applied, the chances are low that the patent system does more harm than good over the long run.

4) The evidence that software patents are harming innovation is weak or nonexistent. Mostly, at the innovation stage, patents are ignored. Trolls are unlikely to target tiny players. It is later on, when the innovation is being put to use in implementing an ambitious business model, that problems show up. The evidence that patent litigation is imposing unnecessary costs on the economy is growing. But, again, this is true for sectors other than software, and for litigation other than patent litigation.

My take: Tim Lee's article relies too much on hindsight and the specifics of a particular industry at a particular place in time to be a good guide to policy going forward. But Greg's confidence in the patent system is overstated.

IPBiz notes that it was IBM that obtained the patent for qeues for toilets on airplanes, which people like Beth Noveck don't bring up when savaging the patent system with the Smucker patent on crustless sandwiches.

IPBiz notes that the author Solveig might have been more specific when she wrote: peculiar to our system, because of problems with the way it is administered.

DowJones reported: Home video rivals Blockbuster Inc. and Netflix Inc. have settled their patent dispute over Blockbuster's creation of an online service that is similar to Netflix's.

In a Securities and Exchange Commission filing on Wednesday, June 27 Blockbuster said the two companies had resolved their patent litigation, but said the terms of the deal were confidential. Netflix filed suit in April 2006, alleging that Blockbuster copied its methods for online home video rental orders. Blockbuster then countersued shortly after, claiming Netflix didn't invent the methods it used.

The work, published online by the journal Cloning and Stem Cells, is reported by scientists from Lifeline Cell Technology of Walkersville, Md., and from Moscow.

IPBiz questions: isn't this advance what Hwang Woo Suk did in his FIRST paper to Science? After all the smoke cleared (that Hwang did NOT do SCNT), it was concluded that he did create a stem cell line from an egg.

The breadth of opposition to this legislation [S. 1145] indicates the need for a fuller debate, but Sen. Leahy has tossed his lot with Microsoft, Intel and their allies. His desire to rush the bill through the Senate does a grave disservice to our patent system. The future of American innovation hangs in the balance.

Of the proposed "second window" of oppostion in S. 1145, Jones wrote:

If Congress creates a new, open-ended, post-patent review procedure to challenge the validity of a patent throughout its life, the benefits to patent holders become very uncertain.

Incentives to seek patents are weakened, venture capitalists face higher risks when backing new ideas, and business models that depend on patents are discarded.

Separately, see a posting of IPFrontline which discusses issues with Jaffe and Lerner's idea that the patent system is broken, as well as issues with peer-to-patent.

***Separately, on June 27, 2007, a letter was sent to Pelosi, Reid, Boehner and McConnell (signed by a variety of entities, including Phyllis) which raised similar issues to those of the Jones commentary.

Separately, on June 26, 2007, a letter was sent to Leahy and Specter from medical organizations strongly attacking the post-grant opposition component of S.1145. Signers included the Amytrophic Lateral Sclerosis Society and the MDS Foundation.

Another major issue in the bills is a new way of challenging patents after they're issued, called post-grant review. The bills would allow companies sued for patent infringement to file challenges with the U.S. Patent and Trademark Office (USPTO)

The post-grant review would create a continuing question about whether a patent was valid, making it difficult for small companies like AmberWave to get funding, Gallagher said. "If we can't get venture capital, we can't function," he said.

Instead of a new way to challenge patents after they're granted, Congress should focus on giving the USPTO more money, he said. "The way to ensure patent quality is to get it right the first time," he said.

BSA's Simon said worries about a new post-grant review watering down the value of patents are overblown, because there are several ways to challenge patents now. But the USPTO's current patent-challenging mechanisms don't work well, and the most common way of challenging a patent, in a lawsuit, can cost millions of dollars, he said.

"We think administrative challenges are good things," he said. "It saves time, it saves money."

IPBiz is continually amazed that the folks who argue "patent quality" in the patent reform debate are the SAME folks who argue for a product inspection step (post grant review), which is exactly the OPPOSITE of what quality guru Deming taught. If one wants to improve patent quality, strengthen the patent examination step. At the end of the day, the pro-post grant review folks constitute "a house divided against itself." One can't be pro-quality and argue for a step which is anti-quality.

In the past, IPBiz noted errors in cites in law reviews including the University of Chicago Law Review (cited reference offering no support AND wrong page noted; editor declines to correct) and the Stanford Law Review (proclaiming Gary Boone the inventor of the integrated circuit, with Noyce and Kilby unmentioned). Now we have one in the Law Library Journal. IPBiz suggests that once the Law Library Journal screws up a cite, it's time to recognize that one cannot assume the text in journals is correct. You are on your own.

Wednesday, June 27, 2007

Life is tough on Mill Hill in Trenton

The Trentonian of June 26, 2007 offerred a different spin on the crime in Mercer County business discussed in an earlier IPBiz post.

Rather than simply trying to make a city look safer than it really was, the Trentonian's "Shot Down in Mill Hill" reported efforts to make a mugging in an upscale neighborhood look like a more common (but "isolated") street crime.

Thus, the Trentonian noted that the official press release of the incident stated a 31 year old man [whose name is Ramsey Lynch] suffered a nonlifethreatening gunshot wound. Furthermore, the Trentonian itself on Sunday said that the gunning stemmed from some dispute earlier in the day elsewhere in the city, based on an [untrue] report by police investigators. [sort of a Trenton business as usual event?] A police captain called the shooting an isolated event.

The nonlifethreatening gunshot was a shot through the kidney. Separately, Joe's Mill Hill Saloon was hit with a stray bullet. As a result, some musicians and DJs told Joe's owner they were NOT coming back.

On the facing page to the Lynch story was a headline "Police looking for clues in Cluck-U riot," describing a riot of some 300 people and the shooting of one person.

***Of different "news," there was a re-enactment of the last ball thrown during a Dodgers game at Ebbets Field, with Danny McDevitt and Joe Pignatano present. No word if there will be a 50th anniversary event, which will occur September 24, 2007.

Star loses to Reynolds on inequitable conduct

Forbes noted:

The court ruled that Star engaged in inequitable conduct before the US Patent Office in obtaining patents involving a method of treating tobacco to substantially prevent the formation of tobacco-specific nitrosamines.

Star Scientific sued tobacco giant R.J. Reynolds in May 2001 for infringing its tobacco curing patents. R.J. Reynolds fought back, winning invalidity by indefiniteness in January for 6,202,649 and 6,425,401, and now egregious inequitable conduct for 6,805,134. Law firms participated in a cover-up.

The patenthawk post includes mention of the (initial) patent attorney for Star: Patent counsel (Delmendo) and Williams were aware from the Burton Letter that Burton had obtained cigarettes in China that had low or non-existent levels of TSNA.

Of Professor Burton, patenthawk noted:

To cover all bases, Star bought Burton.

Star funded a chair at the University of Kentucky in Burton’s name, paid him a retainer more than his annual salary regardless of any work product produced, and gave Burton hundreds of thousands of dollars in stock options.

Star Scientific Inc.'s (STSI) board cleared the separation of its core businesses, tobacco manufacturing and intellectual property and new-product development operations, with the goal of positioning the company to consider spinning off to shareholders its Star Tobacco Inc. business.

The Petersburg, Va., company Monday said it recently incorporated a new subsidiary in Delaware which will develop tobacco-based pharmaceutical products, including products for the treatment of smokeless tobacco dependence, as well as products that would use certain monoamine oxidase agents in tobacco to treat neurological conditions.

Tuesday, June 26, 2007

Resolution of the Cha matter could have been relatively quick if either Lee (who submitted the F&S manuscript alleged to have been plagiarized) OR Fertility & Sterility (who received the manuscript) would have produced a copy of the manuscript so that the list of authors on the manuscript could have been viewed. Neither Lee nor F&S have ever produced the original manuscript.

As IPBiz wrote on April 7:

The long and the short of the last two points is SIMPLE. Someone (Dr. Lee or Fertility and Sterility) should produce the initial copy of the manuscript (so that one can see "who" the AUTHORS were. Separately, someone should produce the agreement signed by Dr. Lee with Fertility and Sterility to see if "no prior publication" was part of the agreement.

Kim himself suggests that the manuscript has not been shown to Kim: Why Cha and DeCherney don't present the first manuscript to me or to prosecutors in Korea (I have asked FS to show me the evidence many times but so far no response) If, hypothetically, Kim IS a named author, he would have a right to see the manuscript. That F&S (apparently) won't show Kim the manuscript suggests that maybe Kim's name is NOT on the manuscript as an author.

Although the californiastemcellreport writes about If It Can't Stand the Light of Day... , they have not been talking about things hidden in the Cha matter, or about Loring's patent application on stem cells. Separately, recall the Cha-RMI CIRM grant concerns human SCNT, the same topic as that involved in the fraud of Hwang Woo Suk.

See alsohttp://ipbiz.blogspot.com/2007/06/la-times-discusses-decherney-apology-to.html

Aharonian blames nanotech companies for backlog, but who's to blame for the '811?

Nanotechnology companies have only themselves to blame for the sluggish rate at which their US patents are being awarded.That was the message at a recent Department of Commerce meeting in Portland, Oregon, when undersecretary for technology Robert Crescanti heard start-ups complaining that delayed patent decisions are losing them the chance to raise crucial venture capital. Crescanti countered that the delays are the result of firms poaching nanotech-trained examiners en masse from the US Patent and Trademark Office in Washington DC to draft their own patents.San Francisco-based patent expert Greg Aharonian says the problem goes beyond nanotech: "Delays in some areas of software and business methods are just as long for the same reason - the good examiners are gone."From issue 2600 of New Scientist magazine, 24 April 2007, page 23

IPBiz notes that on the one hand patent examiners are being blamed for not recognizing pertinent prior art but on the other hand such "incompetents" are being scooped up by private enterprise. Hmmm.... Maybe it's only in Baltimore.

Separately, for those who remember page 144 of Innovation and Its Discontents by Jaffe and Lerner, which discussed the (allegedly) incompetent handling of prior art to the '811 patent by the USPTO, it was indeed Aharonian who first made the (incorrect) allegation, which has now grown into an urban legend.

At a seminar hosted by right-of-center think tank the Progress and Freedom Foundation, senior lawyers with Goldman Sachs Group Inc. (GS), Johnson & Johnson (JNJ) and Microsoft Corp. (MSFT) were all in agreement that it seems increasingly likely that Congress will pass some form of reform to the country's patent laws.

CNN also noted:

A bill that has the support of lawmakers on both sides of the aisle in both houses of Congress - a rare achievement - is winding its way through the legislative process.

While it so far has not encountered any real opposition, the legislation likely faces substantial redrafting before it reaches either chamber floor for a full debate and vote.

There are a number of controversial aspects to the bill, including an attempt to provide more stringent guidance to judges when they are determining damages against patent infringers, and plans for a two-stage system for challenging patents after they are granted. [IPBiz: apportionment of damages AND post-grant opposition.]

Of applications, John Whealan said that in 2006, the Patent Office received around 400,000 applications for new patents, a far greater number than could realistically be processed by government officials. IPBiz query: and why didn't the USPTO have enough people to do its job? Whealan suggested that were the application fee to be increased from its current $ 1,000 to $5,000 or $10,000, it could deter some of the less genuine applicants.

There are multiple reasons for the high demand and scant supply of attorneys schooled in the intricacies of patent law, and they are rooted in an explosion in the number of applications and patents issued over two decades.

Applications have more than tripled in that time, to more than 440,000 last year, with about 184,000 patents being issued, according to the U.S. Patent and Trademark Office.

Meanwhile, about 3 percent of the nation's 1.1 million active lawyers specialize in the demanding field, which requires scientific or technical expertise in addition to a law degree. Patent lawyers also must pass a specialized test on top of the regular bar exam. Maryland has about 230 intellectual property lawyers, according to the state bar association. [IPBiz: 3% would be 33,000]

The article quotes Avis Caravello:

But the demand for patent lawyers vastly outweighs the supply, she said.

"If I had the right ones, I could place as many as there were hours in the day," said Caravello, a lawyer and principal at the search consultant firm that bears her name. "When I get a candidate like that, it really is 'Where do you want to work?'"

Paychecks reflect the high value placed on these specialized lawyers. An IP partner at a top firm typically is hired at $700,000 or $800,000, even $1 million a year, with the most meager book of business - the work that comes with them, Caravello said. First-year associates at large firms can expect a 10 percent to 15 percent premium over base pay of about $160,000.

Firms opening new IP offices typically are given war chests by their home offices so they can sweeten offers with signing bonuses or whatever it might take, Caravello said.

One even has text from Ocean Tomo:

James E. Malackowski, chief executive of Ocean Tomo LLC, an intellectual property investment bank, said he believes that the demand for IP lawyers will continue, reflecting a shift in the nation's economic base.

"I don't think in the next five years you're going to see any slowing," he said. "We really have gone through an intellectual revolution much like the industrial revolution of 100 years ago. IP is not a flash in the pan like some would say the hopeful business models of the dot-com era were."

IPBiz notes that intelproplaw has 50 job openings since June 4, 2007 (which includes many for patent agents and other non-lawyers) and of which many are re-cycled from previous dates. Not one posting was for a job in Baltimore, but there was an opening for the position of Assistant Attorney General in The Republic of Palau. There is a June 22 posting from Lee & Hayes in Spokane, which includes the text: According to salary.com, the cost-of-living in a place such as San Jose, CA is about 40% higher than it is in Spokane. Pearl Cohen has an opening for "patent assistant" and Monsanto has an opening for "patent scientist" in Ankeny, Iowa.

"When you have a really good candidate who everyone wants, you don't want to lose out over a couple hundred thousand dollars," she said.

Although the website postgrant announced: Our thinking is that a Post-grant Opposition procedure will be come law in 2007 in the USPTO, that thinking is not shared at IPBiz and by certain others, such as Harold Wegner, who wrote:

Going into the hearing, the Chairman clearly recognized the total impasse from the last Congress over "second window" post-grant review and that the current legislation as introduced is dead in the water.

IPBiz says "second window" is NOT happening, and that "first window" might turn into an upgraded re-exam provision. (thus, no "post-grant opposition" procedure is a real possibility, but then it is possible that patent reform 2007 may end as patent reform 2005).

Some people should not be writing about the topic of oppositions and re-exams until they get the facts straight. Thus, one has the following:

Why is reexamination considered not very effective? Well, for one thing, it has to be requested within three months of the issuance of a patent, unless the Director of the Patent Office decides to on his or her own initiative. [sic, IPBiz: !!] The Director can trigger a reexamination at any time. This serves as an important safeguard in truly unusual or egregious situations, but one that’s tempered by the fact that the Director presumably is a disinterested third party. Post-grant review can be requested by an infringer at any time, throughout the life of the patent, if the patent is likely to cause the infringer “significant economic harm.” There is, therefore, little incentive for interested third parties to participate at the front end of the process when patents are issued. The result is unnecessary risk for innocent third parties who participate in the marketing of new products and processes, such as investors, employees and suppliers. Most if not all decisions of government agencies must be appealed within limited timeframes such as 30, 60 or 90 days, because finality is what allows people to get on with their lives and plan for the future.

For the record, current re-examination rules allow a request for re-exam to be made anytime during the lifetime of a patent. The grounds to seek re-exam are more narrow than the grounds that WOULD BE allowed in the proposed post-grant opposition procedure AND the post-grant opposition procedure would be MUCH MORE EXPENSIVE than current re-exams.

Monday, June 25, 2007

More on Little Bighorn

Further to the comparison of Custer's weaponry at East Cavalry Field (repeating Spencer rifles on July 3, 1863) to that at Little Bighorn (single shot Springfields on June 25, 1876), a book "The Day the World Ended at Little Bighorn" by Joseph M. Marshall III (Viking 2007) confirms that the Lakota did have repeating rifles BUT also observes:

"Some advantage in firepower, taking into consideration all of the various kinds of firearms used by warriors, may hve been possible simply because of the numerical superiority in this case. But how many repeating rifles would have tipped the balance to an overwhelming superiority cannot be known. (...)a rifle in hand did not always mean an adequate supply of ammunition. (...)The greatest advantage of a repeating rifle is the rate of fire, or shot after shot without having to pause to reload. That advantage is useful as long as there is sufficient ammunition." [page 103]

At pages 105-106, Marshall raises the issue that the Springfields jammed during the fighting.

***LBE discussed aspects of Custer and of the Spencer rifle in 88 JPTOS 1068 (2006). The likely low abundance of ammunition with the Lakota would impair the advantage of the Lakotas (but not Custer's men) having repeating rifles. However, the fight of Custer's battalion at Little Bighorn is NOT like the fight of Custer's Wolverines at Gettysburg, wherein the defenders NEEDED to use the rapid fire of the Spencers to fight off a superior force. And, when they ran out of ammo, that fight was over. The Lakota had more men AND the repeating rifles AND a better position AND they were fighting for women and children.

A point in 88 JPTOS 1068 (2006) was about innovation. The Spencer rifle was PROVED a superior weapon both at East Cavalry Field and at Selma, Alabama during Wilson's raid. Yet, the U.S. Army did not adopt the superior weapon. Separately, for all the complaining about "how the Wrights impeded innovation in aircraft during World War I," there is not much discussion about how the Wrights repeatedly went to the Army and were rebuffed.

Joseph M. Marshall made another point, to the effect that certain historians may have shaded history to present some rationalization for how Custer lost. The topic of shading things (e.g., the "97% patent grant rate) comes up big time in the patent reform discussion.

IPBiz has discussed various plagiarism incidents (e.g., 6/18: student accuses prof of plagiarism; 6/15: one Sears home author accuses other Sears home author of plagiarism; 6/13: the Cha/Kim business in South Korea and in U.S.) but a matter in Oregon, about two reviews of the play "Floyd Collins", has some details of interest.Better to read the text of Ian Gillingham directly at the Willamette Week Online.

The comment to the story made by Ben Waterhouse about "parroting the first round of reviews" is highly relevant to what has gone on with patent reform advocates parroting the stories of Jaffe and Lerner. If one is going to parrot a story about patent law, the "parroter" ought to check to see if the story is correct. Two additional nuances: with the '811 patent on page 144 of Innovation and Its Discontents, the story of Jaffe and Lerner is wrong AND, separately, misidentifying the patent on page 144 but telling the same story adds greater humor to what is going on. IPBiz's bottom line: Repeating wrong stuff, even with credit, is a greater harm to the public than repeating true stuff, without credit.

Like IPBiz has said before, pure plagiarism is bad, but, at least when the stuff is true, the public doesn't go off with fantasies, as it did with Jan-Hendrik Schon and Hwang Woo Suk. Reading either the review of Waterhouse or of Hallett would have given the consumer a true flavor of "Floyd Collins." However, when legal academics go off on bizarre tangents, like copying from page 144 of Innovation and Its Discontents (with mixed success), it's just sad.

To return to the review business, when a bunch of music reviewers (including one at the Boston Globe) were telling everyone how great the classical music of a certain woman was (when in fact it was "digitally remastered" from the works of others), the greater harm was NOT the similarity of the reviews, BUT THAT ALL THE REVIEWS (AND REVIEWERS) WERE WRONG. Consumers made bad decisions based on the bad reviews, just like Congress may be making a bad decision on patent reform, because it's utilizing information that is simply wrong.

Phyllis Schlafly, demon to Jaffe/Lerner, criticizes patent reform

Jaffe and Lerner, in their book Innovation and Its Discontents, never mentioned Bardeen/Brattain/Shockley (inventors of the "good" transistor patent) or Selden ("inventor" of the bad car patent), but they mentioned Phyllis Schlafly several times. They mentioned Ollie North too, with Schlafly, North, and patent attorneys all portrayed as demons.

Phyllis has some commentary on patent reform 2007 on humanevents.com.

Separately, of the commentary in the Salt Lake City Tribune that appeared on June 25, one should note the first comment thereto, which suggested that patent trolls were bad for small inventors AND separately bemoaned the fact that small inventors would have to read bad business method patents. Putting aside the issue of bad business method patents, the whole point of the patent system is that one is supposed to read patents. By reading patents one avoids re-discovering past inventions and thereby wasting resources. Part of the tension with the folks at the Harvard Business Review (who write "plagiarize with pride") is that the business folks view the invention (and the disclosing of the invention) as a small part of innovation. And frequently a part of innovation that can be disregarded. More attention should be placed on this battlefield of the patent reform wars, which, like East Cavalry Field at Gettysburg, tends to be disregarded.

[As noted elsewhere, the National Academy report on patents was really by NAS/STEP and the committee (unlike that of the NAS in 1918) didn't include many scientists or patent lawyers. The handling in the NAS/STEP report of the "patent quality" issue was not definitive, with lack of firmness something that seems to plague the coal report also.]

The U.S. Supreme Court on Monday [June 25, 2007] turned away a challenge to a "reverse payments" deal between an AstraZeneca PLC unit and a Barr Pharmaceuticals Inc. unit to delay marketing of a generic breast-cancer drug.

The rejection came after the U.S. Solicitor General's Office filed a legal brief steering the justices away from the case.

Reverse payments occur when pharmaceutical companies pay a generic drug maker to hold off on marketing an alternative version of a brand-name drug near the end of exclusive patent protections. In an unusual public dispute between two federal agencies, the Federal Trade Commission [FTC], which is working to stop the patent deals, and the Justice Department [DOJ] have been at odds over whether the Supreme Court should weigh in on the practice.

IPBiz notes that just as IT and pharma are NOT on the same page on patent reform, the DOJ and the FTC were not on the same page in the tamoxifen matter.

[IPBiz notes, more often than not, the Supreme Court follows the Solicitor's advice on hearing cases. Here WSJ Online said: U.S. Solicitor General Paul Clement, in the government's brief, said the Second Circuit didn't properly review the reverse-payment deal. But Mr. Clement nonetheless said the case should not be heard by the Supreme Court.]

The Biloxi Sun Herald (but not the californiastemcellreport) carries a story about the return of Hwang Woo Suk to the laboratory:

Hwang gained worldwide fame in 2005 for his claimed breakthroughs in cloning human embryos and extracting stem cells from them. In fact, he had done no such thing. It was, according to prosecutors, a "fraud unheard of in history."

An embarrassed South Korean government charged him as a criminal and stripped him of generous research funds and lavish perks, including personal bodyguards.

Now, Hwang - booted from the country's top-ranked Seoul National University - and about 30 loyal researchers have moved to a private lab outside the South Korean capital of Seoul to resume their work, details of which were revealed to The Associated Press.

"We knew that was not the professor Hwang we knew," Kim Sue, one of Hwang's chief researchers, said during a two-hour interview, the only one scientists connected to Hwang have given since the scandal. "That's why we told the professor that we wanted to work with him again."

The United States Congress is presently considering the Patent Reform Act of 2007. This complex legislation is the culmination of five years of work by a group of large technology companies, Microsoft, IBM, Intel and Cisco chief among them.

On post-grant review:

This process, called post-grant opposition, is comparable to someone desiring to buy your house. If you don't want to sell or the would-be purchaser doesn't like the price you're asking, the buyer sues you, claiming you don't really own your home and asks to live in your house for nothing. After you paid your lawyer to prove that you really own your house twice, three times or 10 times, you might get a little mad.

On first-to-file:

The next problem is simpler to describe. This provision says that the first person to file a patent application owns the patent even if someone else created the invention first. If this proposal becomes law, you could work for years to develop the world's best mousetrap, then when your nosey neighbor wandered into your garage and saw it, he could file a patent application and own the patent on your mousetrap. There are many other provisions in the Patent Reform Act, but the idea behind most is the same - radically weaken our patent protection to benefit a few influential patent infringers.

The text of the editorial/commentary was written by David Vandagriff of Helius, Inc., located in Lindon, Utah.

Separately, Goldie Blumenstyk writes in the Chronicle of Higher Education:

Without some adjustments, the institutions and companies argue, the new [proposed] laws will undermine the value of patents and "hinder innovation across the diverse sectors of the American economy we represent." (...) Universities and companies say they fear such a system [post-grant opposition], as now designed in the legislation, would allow third parties to "harass the patent holder" and create too much uncertainty about the value of an issued patent.

While the committee unanimously approved picayune revisions to the bill, the more contentious issues were shelved for further debate, giving the tech and pharma lobbies yet another opportunity to splatter themselves and any legislator in range with heavy bluster.

***IPBiz notes the second comment below. At the time of the initial IPBiz posting, the sltrib website denoted the material as an "editorial", even though the explicitly denoted authorship by David Vandagriff suggested the piece was what would be considered an op-ed. On revisiting the website, there is no mention that this is an editorial, AND the piece seems to be grouped under "commentaries." The heading of the IPBiz post has been changed to reflect this. Of the second comment below, IPBiz had covered the earlier piece by the other Utah CEO (Micron) with a different point of view on patent reform.

The IPO has PowerPoint slides on the patent quality issue from an FICPI/AIPLA colloquium held in Amsterdam on June 8, 9 2007, which colloquium overlapped with "Spring Seminar 2007" of the LAIPLA and SDIPLA, which meeting also discussed patent quality.

The second slide of the Amsterdam talk was titled "quality patent prosecution," as were slides 3-5. One notes that all the slides amounted to general guidelines for prosecuting a patent application before the USPTO. The slides did not constitute a response to patent reform advocates as to how patents are (allegedly) being granted on nearly every application.

Sunday, June 24, 2007

An article by KATHLEEN GALLAGHER titled UW group opposing patent bill; Research foundation says proposal would weaken rights includes the text:

"Let's face it, the biggest drivers of this (patent reform effort) are Dell and Microsoft. When I sat there and listened to big companies talk about how these little entrepreneurs were unfairly bullying them, it was one of those things you listen to and ask, 'Is anybody buying this,' " said John Neis, senior partner of Madison-based Venture Investors LLC.

When Ted Kennedy said: --otherwise, "it comes down to who has more lobbyists."-- it became apparent that Congress does NOT view patent reform as something which, on an objective basis, has a "right" answer. It's a collision of interest groups, with legal academics not distinguishing themselves. The allegation of a 97% patent grant rate will be remembered as a low point in credibility of legal scholarship.

The program has multiple goals, chief among them to weed out invalid patents, said Beth Noveck, a professor at the New York Law School who originally proposed the program in July 2005. Many tech vendors have pushed Congress to fix what they see as a broken patent system, and one of the biggest concerns is that overworked USPTO examiners grant too many undeserving patents.

One goal is to "improve the quality of patents by providing the patent office with more and better information about inventions for which applications are filed," Noveck said. "We want to prevent the issuance of undeserving patent claims."

Another goal is to make USPTO "more accountable and transparent to the technology community," she added.

In an upcoming article, LBE writes:

The episode with the two papers by Noveck illustrates one foreseeable problem with peer-to-patent. Competitors of the patent applicant are likely to furnish only prior art adverse to the applicant (to advance their own agenda), without discussing either the validity of that cited art or the possibility of intervening art discrediting the cited art. In the above-discussed case, the story advanced by Jaffe and Lerner on page 144 of Innovation and Its Discontents was cited for its truth without an independent analysis of its actual accuracy or a mention of an intervening article which discredited the story advanced by Jaffe and Lerner. Jaffe and Lerner's discussion of the '811 patent falls into the category of an urban legend. Another foreseeable problem with peer-to-patent is that the procedure, if generally adopted, would benefit patent system players with more resources over independent inventors operating with marginal resources. Peer-to-patent will be gamed in a predictable way to the disadvantage of predictable victims.

Given the degree to which the US patent system is in dire need of fixing, the CPRP should be welcomed with open arms. The USPTO hopes that the pilot will be a big success and that, in conjunction with patent reform legislation recently introduced in Congress, we'll end up a with a "highly participatory" examination process. With experts looking over applications for instances of prior art and, most importantly, providing explanations for examiners who might otherwise not fully grasp the concepts outlined in an application, the end result should be stronger patents with nonobvious claims.

IPBiz notes that with "explanations" like Noveck gave of page 144 of Innovation and Its Discontents nobody will grasp the basic concept of "prior art" and the end result will be mass confusion.

The Washington Post inked dross from PC World's Grant Gross about how marvelous it is that big companies let little people take potshots at patent applications.

Pamela Jones, founder of Groklaw, a messy web site rummaging about open-source and free software legal issues, at least had a colorful quote: ""I think of this project as spraying insecticide on stupid patents before they can multiply; and your knowledge of prior art is the bug spray."

The aura of mutual admiration began to fade in July 2003. That's when Mr. Kirk discovered that Mr. Arntzen had copied large portions of his paper without his permission. About one-third of Mr. Arntzen's article -- which was published as a chapter in the 2004 book Vaccines: Preventing Disease and Protecting Health -- was taken directly from Mr. Kirk's paper, which was published two years before in the book Genetically Modified Foods. The graduate student's paper was not cited, but Mr. Arntzen did mention Mr. Kirk among the dozen people he thanked in the acknowledgements.

Although the Chronicle connected Arntzen/Kirk to the Capella University business, it did not note the similarity of those two to the Cha/Kim business. That's somewhat unfortunate because, like the Capella University business, there's a patent involved in the Cha/Kim business which is of potentially greater significance than that of the Cappella University business.

A yahoo.news report Are B-Schools Hiding the Cheaters? seemed to express surprise that an inquiry about cheating to the top 25 business schools by BusinessWeek produced a limited response:

Out of the 25 business schools, only three -- the University of Virginia, Duke, and the University of Chicago -- were able to provide us with specific data about ethical violations among their B-school students. Fifteen schools provided us with information about their policy for dealing with ethics violations, but did not provide specific figures on cheating. And seven schools declined to provide any information (see BusinessWeek.com, 6/21/07, "Schools' Responses on Cheating Stats").

IPBiz notes that one should recall the 2006 IPBiz post MBA students: the biggest cheaters? and recall the 2004 Harvard Business Review article with the sub-heading "Plagiarize with pride." Concern about cheating MBA's is like worrying about "gambling in Casablanca".

Separately, recall a different IPBiz post which noted a comment about "18 Air Force Cadets Exit Over Cheating - this along with the Dean of MIT "not having the courage to change her resume" to list NO Degrees at the time of hiring for the position and lying for 28 years while looking for student credentials for MIT enrollment." Of the MIT story, USAToday/AP had written on 26 April 2007:

To stressed-out parents and students, MIT admissions dean Marilee Jones was a rare voice of reason in the high-pressure world of college admissions. With colleges demanding kids who play sports, run student government and take the heaviest course load they can, Jones shouted back the opposite: daydream, stay healthy, and don't worry so much about building a resume just to impress an elite college.

Yet it turns out that Jones was susceptible to pressure herself. She falsely bolstered her credentials to get a job with the Massachusetts Institute of Technology, and over the course of her career claimed to have earned degrees from three schools. MIT officials say now they have no evidence she ever graduated from college at all.

Jones resigned in April, with the USAStory noting:

A senior MIT official said that by claiming degrees she had never earned, Jones could no longer lead an admissions office that occasionally rescinds the acceptance letters sent to applicants who are untruthful about their own accomplishments.

"We have to uphold the integrity of the institution, because that's what we've been trying to sell and she's our chief spokesperson on that," MIT Chancellor Phil Clay said. It's "regrettable, ironic, sad, but that's where we are."

In another area, recall the story of "why" the APS accepts any abstract for presentation at the spring meeting. From the geomblog:

While earning his master's degree in American letters at Columbia, Tom worked part-time for the American Physical Society (APS), headquartered at the Pupin Physics Laboratory on the Columbia campus in New York City. Fahey, a 20-year-old secretary, was sitting at her desk reading a letter from her fiancé, a Marine serving in Korea, when Bayard Peakes entered the office and emptied a clip of .22 caliber pistol shots into Fahey, killing her. Peakes then fled the campus.

In the weeks that followed, Tom was among those questioned by police for possible leads and motives. Peakes was finally traced through a letter written to him by Karl K. Darrow, head of Bell Labs and secretary of the APS. Darrow had declined to accept a paper Peakes wanted to present at the next APS meeting. Peakes's paper proposed the non-existence of the electron and Darrow rejected it, suggesting that Peakes might ruin his career in physics with such a theory.

At his arrest, Peakes said he wanted to kill a man at the APS since his rejection letter had come from a male. Fahey was the only person in the office and the shots were directed at her instead. Peakes was tried and sentenced to the Rockland County Asylum for the Criminally Insane.

For the last four years, Elizabeth Okazaki has attended graduate physics seminars, used the offices reserved for doctoral and post-doctoral physics students and — for all intents and purposes made the Varian Physics Lab her home.

The only problem is that Okazaki appears to have no affiliation with Stanford and, according to physics professors and students, no real reason to be there.

****Separately-->

The original story, in the Pioneer Press, about Swenson has been Sikahema'd (See Vai Sikahema, Rutgers is Wrong)

Mary Swenson struggled to finish her doctorate at Capella University. So when she found Sharon Bender, it seemed a saving grace.

Article: http://us.rd.yahoo.com/dailynews/rss/searc...6934?source=rss

Following that link, one reaches:

Thank you for visiting TwinCities.com-Pioneer Press. We are sorry the article that you requested is no longer available. Please search for this article in our archive search.

The Pioneer Press is happy to host community conversations about news and life in the Twin Cities. As hosts, we expect guests will show respect for each other. That means we don't threaten or defame each other, and we keep conversations free of personal attacks. Witty is great. Abusive is not. If you think a post violates these standards, don't escalate the situation. Instead, flag the comment to alert us. We'll take action if necessary.

It's not hard. This should be a place where people want to read and contribute -- a place for spirited exchanges of opinion. So those who persist with racist, defamatory or abusive postings risk losing the privilege to post at all.

**May 2011A graduate student from Saudi Arabia has admitted fatally stabbing a professor at upstate Binghamton University.Abdulsalam al-Zahrani, 48, pleaded guilty to first-degree manslaughter yesterday, three months after he was sent to a psychiatric center where experts determined he was schizophrenic but mentally competent to stand trial on a murder charge.Broome County DA Gerald Mollen says al-Zahrani had come to believe Richard Antoun was part of a plot against him and attacked the 77-year-old professor in his office on the suburban Vestal campus in 2009.

Patenting an entirely synthetic free-living organism?

The June 15, 2007 issue of Science has an article entitled "Attempt to Patent Artificial Organism Draws a Protest" (316 Science 1557), which notes an application published on May 31, 2007 directed to "a minimal set of protein-coding genes which provides the information required for replication of a free-living organism in a rich bacterial culture medium." One utilization would be organisms to make ethanol or hydrogen.

MIT's Tom Knight is quoted as "I think it's rather tasteless," with his complaint that the patent application doesn't explain how to build the artificial cell. IPBiz asks: Can one say University of Rochester / COX-2 real fast? IPBiz also notes, contrary to representations by Science's Eli Kintisch in the July 28, 2006 issue of Science, there is indeed a written description requirement in patent law (as well as an enablement requirement). [See 88 JPTOS 743 and the IPBiz post: Kintisch article challenged in Sept. 06 JPTOS]

Frederick Blattner of the University of Wisconsin and Scarab Genomics has patented a stripped down E. coli, and Harvard's George Church is quoted as suggesting a modified E. Eoli might work to make hydrogen (rather than a synthetic Mycoplasma genitalium).

Further action on S.1145 to be delayed till after July 4 recess

As opposition to patent reform (S.1145) increases, significant action is slowing. Although minor procedural amendments were made by voice vote on June 21, substantive action is being delayed until after the July 4 recess. [see cq.com)

One of these was a law review article by Ethan Katsh and Beth Noveck in 99 Law Libr. J. 365 (2007) which includes the text:

P8 In their recent book, Innovation and Its Discontents, 5 Adam Jaffe and Josh Lerner document many patents that are anything but novel and nonobvious, such as patent number 6,368,227 for "Method of Swinging on a Swing" awarded to a five-year-old boy (subsequently cancelled). 6 Or patent number 6,574,645, a patent on a method for drafting a patent. 7

IPBiz notes that there are several things wrong with the statement by Katsh and Noveck:

1. Most directly, if one goes to page 144 of Jaffe and Lerner's Innovation and Its Discontents, one won't find a discussion of US 6,574,645. Right away, one is a little concerned that Katsh and Noveck wrote a "phantom citation," which phantom sailed right through the folks at Law Libr. J., who obviously didn't bother to check whether US 6,574,645 was discussed on page 144 of Innovation and Its Discontents.

2. There is a discussion by Jaffe and Lerner on page 144 of a prior art issue with US 6,049,811, a patent different from the '645 patent.

3. IPBiz has previously noted that Jaffe and Lerner's argument that prior art was missed in the evaluation of the '811 patent, specifically prior art published in JPTOS [74 JPTOS 315] , was in error.

In short, Katsh and Noveck got their own citation to an example in Jaffe and Lerner's Innovation and Its Discontents wrong, and, separately, ignored pertinent (unfavorable) prior art to the argument they were making.

Is that what peer-to-patent is all about?

IPBiz noted of the Rutt paper: Rutt does make a point relevant to the likely success of peer-to-patent and and Kappos' arbitrage: highly intelligent and highly technically trained people with advanced degrees, believe that some set of prior art somehow "knocks out" a patent claim. Upon inspection of the details, however, the patent claim may in fact legitimately be patentable.

In the 2007 paper by Katsh and Noveck, all one sees is a parrot-like repetition of someone else's errors.

***For an earlier citation error, recall that the USPTO's arguments for limiting continuing applications cited to the wrong page of the Lemley/Moore law review article "Ending Abuse..." in BULR.

On June 21, the Fulton County Daily Report noted that a panel of the 11th Circuit in a June 13 ruling in Greenberg v. National Geographic Society II, 97-03924-CV, reversed a separate panel's 2001 opinion, Greenberg v. National Geographic Society I, 244 F.3d 1267, on the basis of intervening law in the Supreme Court Tasini decision, 533 U.S. 233.

The article also stated: In an appellate brief in Greenberg II, Norman Davis suggested that the 2nd Circuit's rulings in other National Geographic cases "set up a conflict" with 11th Circuit Judge Stanley F. Birch's 2001 opinion "through the misapplication of Tasini" and argued that "any resolution of the conflict between the two circuits should be left to the Supreme Court."

Problems of Jaffe and Lerner with the concept of prior art

On the subject of problems with Jaffe/Lerner's Innovation and Its Discontents, we have at page 144 of Innovation and Its Discontents, the text:

Consider Patent No. 6,049,811, which is for a “Machine for Drafting a Patent Application and Process for Doing So.” Describes a computer that poses a series of questions to a potential patentee, asking him to describe his invention. The application for this patent cited as relevant prior art just one other patent and two published articles.

Greg Aharonian pointed out, a line of research at Hitachi anticipated this event by many years (165)

In 1992 JPTOS published an article by two of the managers of Hitachi ’s Intellectual Property Division, describing in detail their development of a new system to automate the patent application process (166). Apparently the examiner also missed this publication in his search of prior art. [74 JPTOS 315-334 (1992)]

One notes that the idea of the missed reference apparently comes from Greg Aharonian, not from Jaffe and Lerner. One does not see that Jaffe and Lerner investigated 74 JPTOS 315 to prove that this reference does anticipate the claims of US 6,049,811. In fact, the subject matter of 74 JPTOS 315 has nothing to with the claims of US US 6,049,811. One gets a hint that 74 JPTOS 315 is about something entirely different than the '811 patent at page 320: which states "The distributed patent offices convert the application documents and specifications (prepared on word processors) to electronic application format." The "advance" disclosed in the JPTOS article is that "the inventor prepares the patent specification manuscript on a word processor." Of course, the inventor has already written down everything (in no particular sequence) on paper, as Figure 5, on page 321 shows. There is NO TEACHING in the JPTOS article of what is in claim 1 of the '811 patent.

In passing, note the law review article by Ethan Katsh and Beth Noveck in 99 Law Libr. J. 365 (2007) which includes the text:

P8 In their recent book, Innovation and Its Discontents, 5 Adam Jaffe and Josh Lerner document many patents that are anything but novel and nonobvious, such as patent number 6,368,227 for "Method of Swinging on a Swing" awarded to a five-year-old boy (subsequently cancelled). 6 Or patent number 6,574,645, a patent on a method for drafting a patent. 7 The patent awarded to Smucker's for the crustless peanut butter and jelly sandwich is, by now, legendary. 8 Jaffe and Lerner describe a patent sought for expirationless options thirty years after economists won the Nobel Prize for the same idea. 9

n5 ADAM B. JAFFE & JOSH LERNER, INNOVATION AND ITS DISCONTENTS: HOW OUR BROKEN PATENT SYSTEM IS ENDANGERING INNOVATION AND PROGRESS, AND WHAT TO DO ABOUT IT (2004), reviewed by Rochelle Cooper Dreyfuss, Pathological Patenting: The PTO as Cause or Cure, 104 MICH. L. REV. 1559 (2006) (book review).

However, concerns about bias and tunnel vision are also quite salient in the context of legal and policy determinations. Because of specialization, the possibility of bias is greater for the Federal Circuit than for the regional United States Courts of Appeals. Just as agencies can suffer from bias, so too can specialized courts. 236 In particular, unlike generalist courts of appeals, the Federal Circuit is closely connected with a particular bar, the patent bar. Although the patent bar has members who represent both plaintiffs and defendants in patent cases, patent lawyers generally have an interest in a patent system that is relatively robust. 237 Thus, the Federal Circuit is not likely to hear many arguments that raise fundamental legal and policy questions about the system. Notably, various empirical studies indicate that the Federal Circuit is substantially less likely to find patents invalid than its predecessor regional courts of appeals. 238 While this is hardly definitive evidence of capture--the regional courts of appeals may well have been too demanding in their validity standards, and some empirical studies also suggest that the Federal Circuit may be more likely than its predecessors to read patents narrowly and hence find them not infringed 239 it is suggestive of capture.

Footnote 237 is to Jaffe and Lerner, and includes the text: (noting that the proliferation of patents has led to a proliferation of patent litigation, rendering lawyers the "key players" in patent struggles).

Criticism of Jaffe/Lerner's Innovation and Its Discontents

The work of Jaffe and Lerner is somewhat criticized in a law review article by Peter Menell formatted as a patent application (13 Mich. Telecomm. Tech. L. Rev. 487). At the beginning, one has the text: This Article is fashioned as a patent application to illustrate the patent system's shift away from subject matter limitations and highlight the need for a neutral, comprehensive framework for patent system reform. To the extent that the style of this Article creates any misimpression about its purpose, any ideas contained herein are dedicated to the public.

Within, Menell writes: Given their comprehensive discussion of the economics of patent policy, n23 it is remarkable that they so readily reject categorical reform choices. Their position is based less on a careful analysis of the costs and benefits of such policy options and more on a variety of cursory objections. Although they include the expansion of patentable subject matter among the causes for the overbroadening of patent protection, n24 they seem resigned to the view that patent law must extend to "anything under the sun that is made by man." n25 They confront this issue more directly [page 497] in their recommendations chapter. Although recognizing that "the major problems" in the patent system areperceived to be in the areas of "software, business methods, and certain aspectsof biotechnology such as genetic sequences," they assert without furtherexplanation that these problems are merely transitional n26 and "manifestationsof the broader problems of the system as a whole." n27 They worry thattechnology-specific reforms would open up the patent system to a Pandora's box of special pleading. n28

Footnote 23 appears as:n23. Id. at 25-77.

Within footnote 36, one notes that Menell does NOT note the authorship of the NAS report as involving STEP: Nat'l Research Council, Nat'l Acads. of Sci., A Patent System for the 21st Century (Stephen A. Merrill, Richard C. Levin & Mark B. Myers eds., 2004) [hereinafter "NAS Report"]. In fact, at footnote 39, Menell obscures the true nature of the involvement of economists in the NAS/STEP report: Given the composition of the Committee on Intellectual Property Rights inthe Knowledge-Based Economy, which included several corporate and patent professionals, it is not surprising that the group declined to question the dogma that patents should be available for "anything under the sun made by man."

The type of criticism of Jaffe and Lerner by Menell is akin to saying Genghis Khan was a bad person because he had dirty fingernails.

Statement of Mark B. Myers Sr. Vice President, Corporate Research and Technology Xerox Corporation Committee on House Judiciary Subcommittee on Courts, the Internet, and Intellectual Property February 15, 2007 Good afternoon, Chairman Berman and members of the subcommittee. I am the former senior vice president for research and technology of the Xerox Corporation. Together with Richard Levin, President of Yale University, I chaired the Committee on Intellectual Property Rights in the Knowledge-Based Economy of the National Academies, comprised of the National Academy of Sciences, National Academy of Engineering, and the Institute of Medicine,

The provisional application was filed 1/05, by Patterson et al., same council; the utility patent was filed 1/06 by Gray, Plant et al., and published 7/06 and is currently awaiting examination.

Whether or not Swenson, Paul Tosto, or Bender's attorney would believe LBE (a registered patent attorney), one cannot easily contradict cold, hard facts that appear on the USPTO website. Thus, the nonsense that Herring and Curtiss tried against the Wright Brothers nearly 100 years ago won't fly in 2007. Separately, as much as Terri Somers (and others) want to forget the Loring patent application on embryonic stem cells, that sort of thing won't fly in 2007, either.

Finally, this mini-episode with the Swenson "patent" also illustrates why "rational ignorance" won't fly. There has to be one place people can seek in order to obtain "authoritative" information. Whether on procedural matters (as with the Swenson "patent") or on substantive matters (as in patent "quality"), one has to be able to believe the information (and decisions) of the USPTO are as good as can be obtained. If there is a prevalent belief that a patent is only "good" after it has been successfully litigated, we're all going to have big problems.

Stemcellreport on San Diego consortium

Somers [of the San Diego Union-Tribune] did not report any negative comments on the CIRM or consortium plans, which were probably not made at the session. But one reader of the newspaper's Web site, identified only as "ghoward79" filed this online comment on Somers' story:

"If it has such promise then private investors would be all over it. Think about the investment returns! Either way companies promoting this are making money off it and they want someone else to pay the price."

Activist complaints about the private sector's focus on adult and umbilical-cord stem cells have driven the state to spend $3 billion on embryonic stem-cell research — something the market won't touch, even though you can find plenty of liberal venture capitalists out there willing to pay for political campaigns with celebrity endorsers.The only thing this amounts to is a boondoggle for voters — fool's gold the private sector had already panned for and rejected, having found the truth out first.

Lawrence B. Ebert wrote in JPTOS (published March 2006, available BEFORE the Lysagt article):

In this time period, there was a belief that commercializations of the technology lay far in the future. Michael Cook wrote: "The feeling among stem cell entrepreneurs and the venture capital managers who stump up funds for biotech start-up firms is that cures – for conditions such as Alzheimer's and diabetes -- arising from embryonic stem cell research are 10 to 15 years away -- if we are lucky."(68)

Footnote 68: Michael Cook, "Fickle fortunes of biotech biz," The Daily Australian, p. 26 (Aug. 17, 2002). Cook quoted Queensland Institute of Medical Research director Michael Good: "I believe the Australian public has been hoodwinked by the proponents of this research, from a scientific perspective."

***Separately, the stemcellreport wrote:

"'I don't know why the consortium emerged or how they did it, but the fact that it has is one of the key developments that Proposition 71 (the stem cell initiative) envisioned,' said John (M.) Simpson of the Foundation for Taxpayer and Consumer Rights.

Of the San Diego connection: In San Diego, the four research institutions on the Torrey Pines Mesa – UC San Diego, the Burnham Institute for Medical Research, the Salk Institute for Biological Studies and The Scripps Research Institute – did not wait for Proposition 71 money to begin making changes. They pushed aside egos and bureaucracy to form a consortium under which they will share grant money and scientific expertise.

The work will be done in a new building the consortium hopes to construct near the Torrey Pines Gliderport.

Forming a consortium is a rather obvious strategy to improve one's funding opportunities and to spread risk.

Note that Terri Somers of the San Diego Union-Tribune still will not discuss the Loring/Burnham patent application on stem cells that had a claim broader than any sought by Thomson / WARF. Even though Loring filed a declaration on behalf of the FTCR / PubPat challenge to the Thomson patents, John M. Simpson of FTCR is not talking about the Loring patent application either. When one is not walking like one's talking, there's a problem.

About Me

I'm a patent lawyer located in central New Jersey. I have a J.D. from the University of Chicago and a Ph.D. from Stanford University, where I studied graphite intercalation compounds at the Center for Materials Research. I worked at Exxon Corporate Research in areas ranging from engine deposits through coal and petroleum to fullerenes. An article that I wrote in The Trademark Reporter, 1994, 84, 379-407 on color trademarks was cited by Supreme Court in Qualitex v. Jacobson, 514 US 159 (1995) and the methodology was adopted
in the Capri case in N.D. Ill. An article that I wrote on DNA profiling was cited by the Colorado Supreme Court (Shreck case) and a Florida appellate court (Brim case). I was interviewed by NHK-TV about the Jan-Hendrik Schon affair. I am developing ipABC, an entity that combines rigorous IP analytics with study of business models, to optimize utilization of intellectual property. I can be reached at C8AsF5 at yahoo.com.